Wilkshire v Registrar of Trade Marks [2009] FCA 1222

Wilkshire v Registrar of Trade Marks [2009] FCA 1222

The application had no reasonable prospects of success because it did not invoke a ground on which the Court could order rectification by cancellation under s 88(1)(a) of the Trade Marks Act 1995 (Cth). The applicant had not demonstrated standing as a person aggrieved, his allegations of impropriety did not show a material or causative basis for the registration, and the consent undertakings, properly construed in context, contractually prevented him from initiating an action interfering with the Council's use and enjoyment of its registered mark.

Jurisdiction
Australia
Judgment Date
30 October 2009
Procedural Posture
Application Under S 88(1) of the Trade Marks Act 1995 (cth) to Rectify the Register of Trade Marks by Cancelling a Trade Mark Registration; Second Respondent's Motions for Summary Judgment or Dismissal And, Contingently, Security for Costs. / Summary Judgment Motion Under S 31 a of the Federal Court of Australia Act 1976 (cth) and Dismissal Motion Under O 20 R 5 of the Federal Court Rules.
Outcome
Application dismissed with costs.
Legal Topics
['rectification of Register of Trade Marks' 'cancellation of Registered Trade Mark' 'person Aggrieved' 'summary Judgment' 'opposition Proceedings' 'consent Orders and Undertakings' 'abuse of Process' 'estoppel' 'security for Costs']
['trade Marks' 'practice and Procedure' 'evidence' 'contract'] ['rectification of Register of Trade Marks' 'cancellation of Registered Trade Mark' 'person Aggrieved' 'summary Judgment' 'opposition Proceedings' 'consent Orders and Undertakings' 'abuse of Process' 'estoppel' 'security for Costs']

Case Brief

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Procedural Posture

Application Under S 88(1) of the Trade Marks Act 1995 (cth) to Rectify the Register of Trade Marks by Cancelling a Trade Mark Registration; Second Respondent's Motions for Summary Judgment or Dismissal And, Contingently, Security for Costs. / Summary Judgment Motion Under S 31 a of the Federal Court of Australia Act 1976 (cth) and Dismissal Motion Under O 20 R 5 of the Federal Court Rules.

Legal Issues

  1. 1 ['Whether the applicant was a person aggrieved for the purposes of s 88 of the Trade Marks Act 1995 (Cth).' "Whether the application enlivened any of the grounds specified in s 88(2) for rectification by cancellation of the Council's trade mark registration." 'Whether alleged dishonesty, collusion or false evidence was material to, or causative of, the registration decision.' 'Whether the dismissal by consent of the earlier appeal precluded or made abusive the present proceeding.' 'Whether the undertakings noted with the consent orders contractually prevented the applicant from initiating the present proceeding.' 'Whether the applicant had no reasonable prospect of successfully prosecuting the proceeding under s 31A of the Federal Court of Australia Act 1976 (Cth).']

Ratio Decidendi

The application had no reasonable prospects of success because it did not invoke a ground on which the Court could order rectification by cancellation under s 88(1)(a) of the Trade Marks Act 1995 (Cth). The applicant had not demonstrated standing as a person aggrieved, his allegations of impropriety did not show a material or causative basis for the registration, and the consent undertakings, properly construed in context, contractually prevented him from initiating an action interfering with the Council's use and enjoyment of its registered mark.

Court Disposition

Application dismissed with costs.

Orders

  • ["The application be dismissed with costs including the second respondent's costs of the motion of 19 June 2009."]